Tag Archives: guidelines

The patentability requirements and examination criteria for computer related inventions has been under scrutiny in major jurisdictions of the world. Considering the special nature of this ever evolving field there have been discussions and changes as well as interpretations of legislation on how best to protect this fast-paced innovation where each invention has a short life. The advent of AI, big data and internet of things has further brought new challenges into the forefront requiring clarity of how to apply the law and protection mechanisms to inventions in these high tech fields. The latest guidelines released by the IPO are a forward and welcome step in this direction.

Initiatives by the IPO

In India specifically, there has been increasing interest in both software products and services. There has been growth in the industry as well as the market for ICT products. The Indian ICT sector has several Indian as well as MNC R&D Innovation centres and is a hot bed of innovations. Consequently, this has led to an increase in patent filings and has resulted in initiatives by the IPO in the form of examination guidelines for CRI. In the past few years these have gone through a lot of changes.

The guidance for examining software related inventions were first introduced in the ‘Manual for Patent Practice and Procedure’ in 2005. It underwent several changes in different versions of this manual released thereafter in 2008, 2010 and 2011. In 2013, a separate draft set of guidelines apart from the manual was released dedicated only to the examination of computer related inventions. These were revised in 2015, but were soon put in abeyance with a new set replacing them in early 2016. However these seem to have been released under pressure since the SFLC had written a letter directly to the PMO complaining about the “unfair” protection offered under the 2015 guidelines. These guidelines could not hold water since they were against the legislative intent and had been formed without giving much thought. Since then, after extensive deliberations and several stakeholder meetings, the latest guidelines have recently been released on 30th June 2017 .

Major Changes

The guidelines of 2016 had placed the presence of “novel hardware” as a patentability requirement for software related inventions. One of the major changes brought about in the latest version is that this requirement has been removed as it was clearly against the intention of the legislature. Apart from that all examples of non-patentable inventions which were earlier given have been removed. It has also been clarified that systems for encoding, reducing noise in communications/ electrical/electronic systems or encrypting/ decrypting electronic communications shall not be regarded as mathematical methods and shall be considered patentable

What Remains the Same

As before, the guidelines focus on the substance of the claims over the form in which they have been worded. They also direct that for means + function claims, the means are to be defined with physical constructional features along with reference numerals to enhance the intelligibility of the claims. The structural features of those means are also to be disclosed in the specification. Guidelines for algorithms and business methods are also retained as is

Scope for More

However, technical effect and technical advancement have not been defined and neither have these terms explicitly been mentioned as patentability criteria. Suitable examples would have also been beneficial to aid understanding and clearly differentiate between what is patentable and what is not

Also summarized below are the new guidelines, which do not show any tangible shift from what was published earlier.

Novelty: For novelty the guidelines state that no matter disclosed before the date of priority is patentable. The guidelines rely on the Manual of patent practise for the same.

Inventive step: The guidelines rely on law laid down by Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd and F.Hoffman la Roche v Cipla for inventive step analysis. Essentially the steps for inventive step analysis are stated to be as follows:-

Identify the “person skilled in the art”, i.e competent craftsman or engineer as distinguished from a mere artisan;

Identify the relevant common general knowledge of that person at the priority date;

Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;

Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of inventive ingenuity?

Industrial applicability: The guidelines state that the patent specification must disclose a practical application and industrial use for the claimed invention wherein a concrete benefit must be derivable directly from the description coupled with common general knowledge to meet this requirement. Mere speculative use or vague and speculative indication of possible objective will not suffice.

Sufficiency: The guidelines state that in cases of patent application concerning computer related inventions (CRIs), Sufficiency requirements are considered as fulfilled if the specification addresses the following:

Each and every feature of the invention shall be described with suitable illustrative drawings.

If the invention relates to “method”, the necessary sequence of steps shall clearly be described so as to distinguish the invention from the prior art with the help of the flowcharts and other information required to perform the invention together with their modes/means of implementation.

The working relationship of different components together with connectivity shall be described.

The desired result/output or the outcome of the invention as envisaged in the specification and of any intermediate applicable components/steps shall be clearly described.

The best mode of performing and/or use of the invention shall be described with suitable illustrations. The specification should not limit the description of the invention only to its functionality rather it should specifically and clearly describe the implementation of the invention.

Not Patentability under Section 3(k): The guidelines discuss not patentability under section 3(k)in great length. The guidelines also state to be overriding the chapter of the Manual, containing provisions pertaining to section 3(k) of the Patents Act, 1970. The guidelines state as follows:-

COMPUTER PROGRAMMES

The guidelines state that the invention should be analysed in substance to determine if it falls under the excluded category. If, in substance, claims in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium belong to the said excluded categories, they would not be patentable.

The exclusion should not be allowed to be avoided merely by camouflaging the substance of the claim by its wording.

However, if in substance, the claim, taken as whole, does not fall in any of the excluded categories, the patent should not be denied.

The claims in means plus function form shall not be allowed if the structural features of those means are not disclosed in the specification. Further, if the specification supports performing the invention solely by the computer program then in that case means plus function claims shall be rejected as these means are nothing but computer programme per se.

MATHEMATICAL METHODS

Method of calculation, formulation of equations, finding square roots, cube roots and all other similar acts of mental skill are, not patentable.

Similarly mere manipulations of abstract idea or solving purely mathematical problem/equations without specifying a practical application also attract the exclusion under this category.

Mere presence of a mathematical formula in a claim, to clearly specify the scope of protection being sought in an invention, may not necessarily render it to be a “mathematical method” claim.

Also, such exclusions may not apply to inventions that include mathematical formulae and resulting in systems for encoding, reducing noise in communications/ electrical/electronic systems or encrypting/ decrypting electronic communications.

BUSINESS METHODS

When a claim is “business methods” in substance, it is not to be considered a patentable subject matter. However, if the claimed subject matter specifies an apparatus and/or a technical process for carrying out the invention even partly, the claims shall be examined as a whole.

However, mere presence of the words such as “enterprise”, “business”, “business rules”, “supply-chain”, “order”, “sales”, “transactions”, “commerce”, “payment” etc. in the claims may not lead to conclusion of an invention being just a “Business Method”, but if the subject matter is essentially about carrying out business/ trade/ financial activity/ transaction and/or a method of buying/selling goods through web (e.g. providing web service functionality), the same should be treated as business method and shall not be patentable.

ALGORITHMS

Algorithms in all forms including but not limited to, a set of rules or procedures or any sequence of steps or any method expressed by way of a finite list of defined instructions, whether for solving a problem or otherwise, and whether employing a logical, arithmetical or computational method, recursive or otherwise, are excluded from patentability.

COMPUTER PROGRAMMES

The computer programmes as such are not intended to be granted patent. The following are essentially not patentable:-

Monsanto Inc, sued Nuziveedu Seeds and its subsidiaries for continuing to sell cotton seeds using its patented technology despite termination of its sub-licence agreement in December 2015.

Justice R. K. Gauba of the Delhi high court (DHC) by an order dated 28th March 2017 ruled that Monsanto Technology LLC’s termination of its sub- licence agreement with Nuziveedu Seeds Ltd was illegal and arbitrary.

DHC has reinstated the agreement, however, the trait fee to be paid to the plaintiffs, for the use of the suit patent and trademarks, have been directed by the Court, to be in accord with the prevalent local laws, as in force.

The court also directed the agreement to be modified according to the format of the GM Technology Agreement Guidelines, 2016 issued by the government.

The Indian Patent Office finalised and issued guidelines for Computer Related Invention(s) (CRIs) on 21st August,2015. They are guidelines for examination by IPO of patent applications in field of CRIs for uniformity and consistency in examination. Here is a brief summary of what the guidelines encompass.

CRI is a collective term used which encompasses se of computer / computer networks / programmable apparatus OR one or more features are realized wholly / partially by computer programme(s)

Procedure / sequence of steps as a finite list of defined instructions

Employs logical / arithmetical / computational method

‘Computer Programme Per Se’:

‘Computer Programme’ taken from sec 2(ffc) from Copyright Act 1957: set of instructions expressed in any form, including machine readable medium, which are capable of causing a computer to perform a task or achieve a result

‘Per Se’ confined to its dictionary (Oxford) interpretation: “by itself” – to show that you are referring to something on its own rather than in connection with other things

Contribution is by way of change in the hardware or functionality of hardware OR

Above mentioned contribution amounts to technical advancement OR

Results in computer being made to operate in a new way OR

Makes the computer into a more efficient or effective computer in case of program linked with hardware

CRITERIA FOR PATENTABILITY

Subject matter should involve either:

Novel hardware OR

Novel computer programme with known hardware:

goes beyond normal interaction between programme and the hardware

affects a change in the functionality / performance of existing hardware

capable of bringing further technical effect

EXAMPLES OF ALLOWABLE CRIs:

Method for granting access to a computer-based object-Comprises of a memory card having program code processor, item of license information, symmetric key etc

Apparatus for eigenvalue decomposition and singular value decomposition of matrices in a wireless communications-Comprises of various hardware elements such as transmitters, receivers, controller, channel processor etc.

Method of controlling an electronic device with touch sensitive display- Involves displaying graphical items and performing an action dependent on identity of these Computer implemented method for identifying required information in a document

Method for providing a network bridge in UDP multicast traffic-Executed by a multicast repeater on a host computer system

Method for estimating time required to download application programs on a wireless device in a wireless network-Involves wireless device, wireless network, data files and server etc

Method for tracking a mobile electronic device using instant messaging

Method of creating tunnel end points for a IPv6 over IPv4 tunnel using a SNMP

EXAMPLES OF NON-ALLOWABLE CRIs:

Method of scoring compatibilities between members of a social network.

Such a method further involves estimating probability and dividing estimated probabilities from the resultant product. This Patent Office held it to be falling under ‘business method’ and ‘mathematical method’ and ‘scheme/predefined set of rules’

A method of operating a computer network search apparatus for generating a result list of items representing a match with information entered by a user

Such a method comprises a database where several items are stored, when each item contains information to be sent to a user which is associated with at least one keyword, an information provider and a bid amount. The Patent office and then the IPAB held it under the category of ‘method of doing business. It held that it was a technically smarter way of doing business but it increases the chance of the higher bidders being close to the top. The IPAB also held that the nature of the invention also passes the test of time and is still a method of doing a business.